WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Zou Yali

Case No. D2014-2164

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by Arnold & Porter, United States.

The Respondent is Zou Yali of Hengyang, Hunan, China.

2. The Domain Name and Registrar

The disputed domain name <marlboro88.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2015.

The Center appointed Michael D. Cover as the sole panelist in this matter on February 6, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a corporation organized and existing under the laws of the Commonwealth of Virginia, United States.

The Complainant manufactures, markets and sells cigarettes, including under the trademark MARLBORO. MARLBORO cigarettes have been made and sold since 1883 and the Complainant is the proprietor of the trademark MARLBORO. The Complainant is the proprietor of registered trademarks in the United States consisting of or including the word “Marlboro”. The earlier registered trademark in the United States was registered in 1908.

The Complainant has also registered the domain name <marlboro.com> and this resolves to the Complainant’s US website “www.marlboro.com”.

The Disputed Domain Name was registered in June 2014 and it resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is the exclusive owner of the famous trademark MARLBORO, that the Disputed Domain Name is identical or confusingly similar to its trademark MARLBORO, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Respondent has registered and is using the Disputed Domain Name in bad faith.

The Complainant submits that it has both registered and common law rights in its trademark MARLBORO. It submits that the Disputed Domain Name is confusingly similar to its trademark MARLBORO. It notes that the Disputed Domain Name incorporates the trademark MARLBORO in its entirety. It also notes that numerous UDRP panels have found that a disputed domain name is confusingly similar to a trademark in those circumstances and that the addition of the generic numbers “88” does not serve to distinguish the Disputed Domain Name. The Complainant similarly notes that the addition of the generic Top-Level Domain name suffix, such as “.com”, is irrelevant in considering whether a disputed domain name is confusingly similar to a trade mark in which a complainant has rights.

With regard to the Respondent having no rights or legitimate interests in the Disputed Domain Name, the Claimant notes that the Respondent was never known by any name or trade name that incorporates the word “Marlboro”, and that the Respondent is not licensed or authorized to use the Complainant’s trademark MARLBORO. The Complainant states that previous UDRP panels have found that, where a complainant’s trademark is distinctive, such a trademark is not one that traders would use without seeking to establish an association with the business and owner of the trademark in question. It states that the Respondent’s intention was to divert Internet users seeking to visit the Complainant’s legitimate website. The Complainant notes that previous UDRP panels have also found that a respondent has no rights or legitimate interests in a disputed domain name where such respondent fails to make use of a disputed domain name and merely points it to an inactive website.

With regard to the Disputed Domain Name having been registered and being used in bad faith, the Complainant submits that it is inconceivable that the Respondent was unaware of the Complainant’s trademark MARLBORO when registering the Disputed Domain Name. It also submits that the Respondent has been using the Disputed Domain Name to lure Internet users away from the website of the Complainant at “www.marlboro.com” and that failure to make use of the Disputed Domain Name supports a finding of registration and use in bad faith and cited various earlier decisions of UDRP panels in support.

The Complainant requests that the Panel decides that the Disputed Domain Name should be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant’s trademark MARLBORO in which the Complainant has rights. The Complainant has extensive registered rights in its trademark and the Panel also finds on the balance of probabilities that the Complainant has common law rights in its trademark for the purpose of the Policy. Although the Complainant does not produce any sales or turnover figures, the Panel accepts the evidence of the Complainant that its trademark MARLBORO has been in use for very many years and it is a reasonable inference that the Complainant will have a very substantial turnover under the business conducted in relation to its trademark.

The Disputed Domain Name incorporates the Complainant’s trademark in its entirety and this with the addition of the non-distinctive elements “88” and “.com”. The Panel finds that the addition of these nondistinctive elements does not alter the fact that the Complainant’s trademark is the dominant element of the Disputed Domain Name.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has demonstrated that the Respondent has not been authorized or licensed to use the Complainant’s trademark MARLBORO.

There is no evidence to suggest that that the Respondent has, before notice of the dispute, made demonstrable preparations to use the Dispute Domain Name in connection with a bona fide offering of goods or services. There is also no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Name or that the Respondent is or has been making legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain misleadingly to divert consumers or tarnish the Complainant’s trademark. The evidence in fact points strongly in the other direction, with the Disputed

Domain Name resolves to an inactive website.

C. Registered and Used in Bad Faith

The Panel also accepts that the Respondent has registered and is using the Disputed Domain Name in bad

faith. The Complainant’s trademark is well-known and it is a reasonable inference for the Panel to make that the Respondent was not unaware of the Complainant’s trademark when registering the Disputed Domain Name.

By the link to the inactive website to which reference has been made above in this decision, the Respondent is passively holding the Disputed Domain Name. The passive holding of the Disputed Domain Name reflecting a widely known trademark such as MARLBORO amounts, in the circumstances of the case, to the Respondent acting in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <marlboro88.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: February 26, 2015